Chicken Sandwich Not Entitled to Copyright Protection

In Norberto-Colon et. al. v. South American Restaurants Corp. the United States Court of Appeals for the First Circuit held that a chicken sandwich is not entitled to copyright protection.  The orginal plaintiffs in the action worked for South American Restaurants Corp. (SARCO) a franchisee and operator of Church’s Chicken in Puerto Rico.  Plaintiff Norberto-Colon and his wife came up with the idea of adding a chicken sandwich to the menu which led Church’s Chicken to begin selling the sandwich.  The chicken sandwich consisted of a fried chicken breast patty, lettuce, tomato, American cheese and garlic mayonnaise on a bun.  The Plaintiffs also came up with the name the “Pechu Sandwich”.

SARCO registered the PECHUSANDWICH mark with the United States Patent and Trademark Office (USPTO).

The plaintiffs claimed that SARCO had stolen their intellectual property and filed suit claiming an entitlement to a percentage of SARCO’s profits from the sandwich.  The claims alleged trademark infringement under the Lanham Act, fraud on the USPTO in the registration process, and also a claim for Copyright Infringement under the Copyright Act.

According to the Court, to determine copyright infringement “the complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Igbal, 556 U.S. 662, 678 (2009).

The plaintiff claimed that SARCO violated its intellectual property rights for the recipe for the sandwich and for the actual name of the sandwich, asserting that the name of the sandwich is a creative work under the Copyright Act and that plaintiff was the creator of this work.

Under 17 U.S.C. Section 102(a) copyright protection is available for:

  1. literary works;
  2. musical works, including any accompanying words;
  3. dramatic works, including any accompanying music;
  4. pantomimes and choreographic works;
  5. pictorial, graphic, sculptural works;
  6. motion pictures and other audiovisual works;
  7. sound recordings; and
  8. architectural works.

The Court found that it was clear that the recipe for a chicken sandwich did not fit any of these categories.  The Court cited Publ’ns Int’l Ltd. v. Merdith Corp., 88 F.3d 473, 480-81 (7th Cir. 1996) for the proposition that recipes are functional directions to achieve a result and are not copyrightable.

Further, the Court held that “words and short phrases, such as names, titles, and slogans are not copyrightable.

With respect to the claim that SARCO committed fraud on the USPTO by registered hte anem PECHUSANDWICH under its own name, the Court found that a claim under Section 38 of the Lanham Act needed to plead:

  1. that the registrant made a false representation of material fact to the USPTO;
  2. that the registrant knew or should have known that the representation was false;
  3. that the registrant intended to induce the USPTO to act or refrain from acting on the basis of the representation;
  4. that the USPTO reasonable relied on the misrepresentation;
  5. and that damage was proximately caused by the USPTO’s reliance on the false material fact.

The Court held that Plaintiff failed to provide any facts to support its conclusions that SARCO committed fraud on the USPTO.  The Court also noted that even though not directly argued, the work more than likely would have been a Work for Hire owned by SARCO, regardless if it was created by Plaintiffs.

Finally, the lower Court also dismissed the trademark infringement claims,and the First Circuit Court of Appeal decided not to consider these claims.  Likely also, the claims of trademark ownership and infringement failed under the Work for Hire doctrine.

Thus, no infringement on the chicken sandwich.

Motion to Determine Rent Eviction in Florida Landlord Tenant Law

When a landlord in Florida files an eviction action for non-payment of rent they attach a 3 day notice alleging how much is owed to the landlord.  After receiving this notice,the tenant is required to file an Answer to the complaint stating why the eviction should not go through or why the rent is not owed.  If the tenant does not respond by filing an Answer and a Writ of Possession is with the file, the clerk will issue the Writ of Possession to get the tenant out of the unit.  If the tenant does file an Answer, he or she is also required to place the amount of rent demanded into the Court Registry pending the ultimate determination of the issues.

If the tenant does not place the disputed amount into the Court Registry, even if he or she has filed an Answer with the court, the court can allow the eviction to proceed.  This is referred to as a Default by the tenant, even though the tenant has Answered the Complaint.

If the tenant places the full amount demanded in the Complaint into the Court Registry the tenant is entitled to a trial on the issues.  Further, if the tenant alleges that they have already paid the rent they should be entitled to a trail.  If the tenant only places a partial amount of the demanded rent into the Court Registry the Court can order that the balance be placed in the Court Registry or a Default will be entered.

Alternatively, or together with the Answer, a tenant can file a Motion to Determine Rent.  The Motion to Determine Rent needs to attach documentation detailing why the amount alleged in the Complaint is not the proper amount of rent due or that the amount demanded is “in error”.  A hearing will be held where the judge determines only the issue of how much rent to place into the Court Registry.

After the judge determines the amount of rent due, he or she will order the tenant to place this amount in the Court Registry, usually by the close of business that day.  If the tenant fails to do so, a Final Judgment of Eviction can occur.

If the tenant places the ordered amount in the Registry the case can proceed to an Eviction Trial to determine all of the issues besides just rent why the tenant should not have to leave the property.

Copyright on the Batmobile

The U.S. Court of Appeals for the Ninth Circuit has held that an individual selling life sized replicas of the famous Batmobile automobile out of his “Gotham Garage” was violating the copyright of DC Comics.  The Court found that the replicas violated the copyright held on the Batmobile in the 1966 television series, as well as the 1989 Batman movie.  The court found that the Batmobile was a “sufficiently distinctive” character to qualify for protection.  The court found this even though the look of the Batmobile was changed and not the exact look of the Batmobile in the original tv series or the 1989 movie.

The court noted that “as a copyrightable persona, the Batmobile need not have a continuing look in every context, so long as the character has distincitve character traits and attributes”.

The ruling affirms that lower court ruling that even though the Batmobile changed slightly over the years, it was always depicted with “high tech gadgets and weaponry” and “bat-like motifs”.

The Court of Appeals held that “As Batman so sagely told Robin, ‘In our well-ordered society, protection of private property is essential.’ Batman: The Penguin Goes Straight, (Greenway Productions television broadcast March 23, 1966).  Here we conclude that the Batmobile character is the property of DC, and Towle infringed upon DC’s property rights when he produced unauthorized derivative works of the Batmobile as it appeared in the 1966 television show and the 1989 motion picture.”

The Defendant had been selling the Batmobile replicas, as well as other movie and television cars, without a license from DC for almost $100,000 each.

Bad Faith – Bona Fide Intent to Use Trademark

When filing an application for a trademark in the United States Patent and Trademark Office, an applicant must file a statement that they are either currently  using the mark in interstate commerce or that they have a bona fide intention to use the mark in commerce at some later date. Under the Lanham Act, an intent to use application may be filed by a person “who has a bona fide intention, under circumstances showing the good faith of such person, to use the trademark in commerce.  15 U.S.C. § 1051(b).

An intent to use trademark can be rejected on the basis that the applicant lacked a bona fide intention to use the mark in commerce.  Often trademark applicants attempting to trade off the goodwill of a well-known mark will attempt to register it to extort the legitimate trademark owner to pay money to prevent the mark from proceeding to registration.  The owner of the well-known mark can file an opposition to the application with the Trademark Trial and Appeal Board seeking to prevent registration.

The basis for such opposition can be, inter alia, likelihood of confusion with the well know mark, the lack of a bona fide intention to use the mark, that the mark was filed in bad faith to trade off the opposer’s mark, that the mark was abandoned, or that the applicant has committed fraud in stating that it was unaware of the opposer’s prior use of a mark.

The initial burden is on the opposer to plead that the applicant has no bona fide intention to use the mark, either by the submission of evidence or on information and belief.  The legal standard is by a preponderance of evidence. See SmithKline Beecham Corp. v. Ominsource DDS LLC, 97 USPQ2d 1300 (TTAB 2010).  The burden then shifts to the applicant to demonstrate through evidence or testimony that it indeed has a bona fide intention to use the mark in commerce, and is not filing the application in bad faith to trade off of the reputation of the opposer’s mark.

In the case of famous or well-known marks it is very difficult for the applicant to claim that it was unaware of the famous or well-known mark either through its use in the marketplace or through application or registration in the USPTO.

However, say the applicant is applying for goods or services which differ from a prior mark and the applicant legitimately believes that there will be no likelihood of confusion between the marks. The applicant could then provide evidence of legitimate attempts to use the mark in commerce.  Such proof could consist of evidence of industry-relevant experience of the applicant; a business plan; potential investors, business partners, distributors, manufacturers; proposed or created packaging; or other legitimate attempts to use the mark.  See Spirits International B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011).

As with litigation in state and federal courts, it is up to the applicant to show that there is a material issue of fact as to whether a bona fide intention to use was made, and made in good faith.  If the applicant cannot prove this, the application will likely be dismissed by summary judgment, with summary judgment meaning that there is no material issue of fact which would support the applicant’s position and thus no trial is necessary.

The alternative can also occur where the legitimate owner or user of a mark has its application blocked by one with a previous application which was made in bad faith.  The second applicant in this scenario could claim as an affirmative defense that the owner of the prior application lacked a bona fide intention to use the mark

With respect to bad faith intentions, the mere knowledge of a prior similar mark is not enough to prove bad faith.  A good example is Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 79, 198 USPQ 271 (CCPA 1978), where it was held that merely knowing about a mark is not enough to infer bad faith.  A party may know of a mark, or the plan of another to use a mark, but reasonably believe  that there is no conflict between the marks.

The International Trademark Association (INTA) resolved a number of factors to view when determining whether a trademark application was made in bad faith.  According to INTA for a finding of bad faith it should be shown that the applicant/registrant knew of a third-party’s rights in a mark that is identical or substantially similar to the applied for mark, and that the applicant’s conduct in applying for the mark is inconsistent with reasonable, honest and fair commercial behavior.

The factors resolved by INTA to show bad faith are:

  1. whether the mark was applied for to take a trademark that is well known in another jurisdiction or to disrupt the business of a competitor.
  2. whether the mark was applied for solely to license or sell it to the legitimate owner.
  3. whether the mark is used primarily to prevent another party from acquiring trademark rights in a particular jurisdiction.
  4. whether the applicant has a legitimate interest in the mark.
  5. whether the applicant applied for the mark to create confusion as to the source or sponsorship of another’s goods or services.
  6. whether the applicant knowingly made false statements in the application.
  7. whether the applicant has a pattern of registering marks that it has no legitimate interest in.
  8. how distinctive the mark is.

It should be noted that a similar standard is used by the Internet Corporation for Assigned Names and Numbers (ICANN) under it Uniform Domain Name Dispute Resolution System (UDRP).  The UDRP was put in place to prevent registration of domain names that are famous or well-known marks.  Under the UDRP, which is managed by the World Intellectual Property Organization, a mediator will look to whether a domain name that is a trademark was registered in bad faith.  The factors view under UDRP 4(b) are:

  1. the domain was registered primarily for the purpose of selling it to the complainant or a competitor for a profit.
  2. the domain was registered to prevent the trademark owner from using it, if the domain name registrant has engaged in a pattern of such registrations.
  3. the domain was registered primarily to disrupt the business of a competitor; or
  4. the domain was registered to attract users for commercial advantage to create a likelihood of confusion as to source or affiliation.

In both the trademark and domain name contexts bad faith looks to the applicant’s intent with respect to registration.  This intent is either proved by direct evidence or inferred from circumstantial evidence.  It should be borne in mind, however, that bad faith is merely  a factor in the overall determination of whether there is likely to be confusion in the marketplace concerning a trademark or domain name.  If the applied for mark is not likely to be confused with the complainer’s mark, there would likely be no legitimate basis to prevent the mark from proceeding to registration.

Law Offices of Michael D. Stewart



.MIAMI Domain Name

The domain name registry Minds + Machines, with the permission of the Internet Corporation for Assigned Names and Numbers (ICANN) is set to begin registering the generic top-level domain name .MIAMI.  The domains will go on sale on October 2, 2015, although companies such as GoDaddy are currently taking pre-registration applications. The costs of the domains are based on their perceived value, with “premium” domains going for more.

A previous sunrise period was held to allow those with registered trademarks to reserve their marks as domain names.  The October 2 date will be considered the land rush period and prices are expected to be higher during the initial roll out.

Whether a company should rush to register their trademark in the .MIAMI domain will be a marketing decision given the vast number of new top-level domains.  The other consideration is whether consumers see value in the new domain as opposed to the ubiquitous .COM.